Tagged: #us

The United Kingdom Intellectual Property Office (UK IPO) released a report today providing a comprehensive and insightful breakdown of online copyright enforcement regimes in multiple countries. Titled International Comparison of Approaches to Online Copyright Infringement, the report evaluates online enforcement regimes in many of the world’s major markets including Brazil, Canada, France, Italy, The Netherlands, South Korea, Spain, the U.K., and the U.S. Beyond providing in-depth details and statistics on each country’s online enforcement procedures that international IP policy nerds like myself find interesting, the report highlights how each country’s enforcement regimes have dealt with the proliferation of broadband Internet and various online media services. It is also a good primer for practitioners to understand online copyright enforcement procedures across borders. Give it a read!

In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement.[1] A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[2] As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.

Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.

The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.

Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters.[3] In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.

Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation.[4] This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.[5]

Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.

To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:

Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.

Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”

TPP Member State Online Copyright Enforcement Systems

United States

Enforcement System

Notice and Takedown

Overview and Notes

The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.

A physical or electronic signature of a person authorized to act on behalf of the content owner alleging infringement;

Identification of the copyrighted work(s) claimed to have been infringed;

Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);

A statement that the copyright owner has a good faith belief that the use of their content is not authorized by the copyright owner; and

A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner of an exclusive right that is allegedly infringed.

The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7 below], being copyright material residing on your system or network.”

(If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;

(If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;

(If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;

The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and

An attached schedule to the notice including a description of the copyright material and the location of the infringing content.

Brunei Darussalam

Enforcement System

Judicial System

Overview and Notes

Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.[6]

Governing Legislation

N/A

Notice Requirements

N/A

Canada

Enforcement System

Notice and Notice

Overview and Notes

Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.[7]

The reasoning why the copyright owner/rights holder believes that an infringement has taken place; and

The copyright owner/rights holder’s contact information.

Malaysia

Enforcement System

Notice and Takedown

Overview and Notes

Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.[9]

As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.

Mexico

Enforcement System

Judicial System

Overview and Notes

Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.[10]

Governing Legislation

N/A

Notice Requirements

N/A

New Zealand

Enforcement System

Notice and Takedown-Judicial System Mix (aka Three Strikes)

Overview

After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.[11]

(If a rights owner is acting as an agent for the copyright owner) Evidence of the rights owner’s authority to act as agent for the copyright owner;

Identify the IP address at which the infringements are alleged to have occurred;

The date on which the infringements are alleged to have occurred at that IP address;

For each copyright work in which copyright is alleged to have been infringed: (i) the name of the copyright owner in the work; (ii) the name of the work, along with any unique identifiers by which it can be identified; (iii) the type of work it is (in terms of section 14(1) of the Act); (iv) the restricted act or acts (in terms of section 16(1) of the Act) by which copyright in the work is alleged to have been infringed; (v) the New Zealand date and time when the alleged infringement occurred or commenced, which must specify the hour, minute, and second; and (vi) the file sharing application or network used in the alleged infringement; and

A statement that, to the best of the rights owner/copyright owner’s knowledge, the information provided in the notice is true and correct; and that statement must be verified by a signature (physical or digital) of the rights owner/copyright owner or a person authorized to sign on behalf of the rights owner/copyright owner.

Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) appeared to have been infringed;

The identity, address, telephone number and electronic mail address of the complaining party (or its authorized agent);

Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its owner, its agent or the law;

Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the complaining party is the owner of an exclusive right that is allegedly infringed or is authorized to act on the owner’s behalf; and

Name and address of the complainant (if acting on the copyright owner’s behalf);

Complainant address for service in Singapore (if a non-Singapore resident);

Complainant’s telephone number, fax number and e-mail address;

Identification of copyright material and location of allegedly infringing content;

A statement that the information in the notice is accurate;

A statement that the complainant is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;

A statement that the complainant requires the network service provider to remove or disable access to the allegedly infringing content;

A statement that the complainant or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;

A statement that the complainant is the owner, exclusive licensee, or agent thereof of the copyrighted content; and

A statement that the complainant submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

**Important Note**: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.

Establishing methods for enforcing copyright protections online has become increasingly important to protecting a content owner’s rights in their works—as demonstrated by the recent launch of the Copyright Alert System (CAS) in the U.S. Most content owners do not have the same resources for online copyright enforcement as the Media and Internet service provider industries (two central sponsors of CAS). However, nearly all owners of protected works can take advantage of relatively inexpensive online copyright enforcement methods to protect their works in many of the world’s major markets. The most commonly used means of enforcement are takedown notices—demands sent from content owners to Internet Service Providers (ISPs) or website hosts to remove infringing content hosted on websites under their control. Depending on the circumstances, an ISP may be compelled upon receiving a takedown notice to remove infringing content from a hosted website, or in some cases, an entire website, for a temporary or extended amount of time.

Takedown notices can have substantial implications on an infringer’s online presence. A takedown can interrupt access to a infringer’s site, potential disrupt or halt their business, and can possibly result in the deletion of their site’s user comments and feedback. With these potentially serious consequences in mind, a rights holder should consider exhausting all alternatives before submitting a takedown notice against an infringing website.

Determining whether to and how to utilize takedown notices as a international copyright enforcement tool requires understanding a few things:

What international legal protections does a rights owner have in their works

Where are works being infringed online

Where is an ISP subject to jurisdiction

What countries have national takedown procedures and what are such countries’ requirements

Further issues after a takedown notice is submitted

Let’s break these down a little further:

What International Legal Protections Does a Rights Owner Have in Their Works? A rights owner cannot consider utilizing takedown procedures abroad without first establishing that their works qualify for international copyright protection. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (A list of Berne Convention countries is available here), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a content owner has questions about whether their content qualifies for international copyright protection, they should consider consulting with their national copyright office or a qualified attorney.

Where are Works Being Infringed Online?To determine if any enforcement measure can be utilized, it is essential to know where in the world a work is being infringed online.If a work is being used without authorization and is available on the Internet in a particular country, it is likely being infringed in that particular country. For example, if a song by a Spanish artist, that qualifies as a protected work under the Berne Convention, is uploaded without authorization by a Malaysian file sharer to their website and is accessible throughout the entire world, it is being infringed in both Malaysia and Spain, as well as potentially in the other 164 Berne Convention countries.

Where is an ISP Subject to Jurisdiction? In order to effectively submit a takedown notice in a country where a protected work is infringed online, the ISP of the infringing website must be subject to that country’s laws in order for the ISP to be potentially compelled to comply with a takedown request. Generally, an ISP is only subject to the laws of a country where it is physically located or countries where it is engaged in enough commercial activity to establish personal jurisdiction. Determining an infringing site’s ISP can be completed through conducting a WHOIS database search. Such a search may also help identify the ISP’s host country by providing details about the ISP. However, this is not always a certainty.

If an ISP is located in the country where a work is infringed online, a rights owner only needs to establish whether that country has takedown procedures (see next section) to determine whether they can utilize takedown notices. However, determining whether an ISP is subject to the copyright laws of a country where it is not physically located is more difficult. In the U.S., a foreign ISP must at least have sufficient “minimum contacts” with the U.S. for the foreign-based ISP to be subject to U.S. law, and potential liability under the Digital Millennium Copyright Act (DMCA). Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945). Generally, such contacts have required purposeful interactions with U.S. citizens and commerce, such as marketing its services in the U.S. that would foreseeably bring the ISP under U.S. jurisdiction. Asahi Metal Indus. v. Superior Court, 480 U.S. 102, 112 (1987). It must also be “reasonable” to bring the ISP under U.S. jurisdiction, based on multiple factors. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).

To illustrate these requirements using the previous example of the Spanish musician: Let’s assume that an Australian ISP hosts the Malaysian file-sharer website whose infringing content is available in the U.S., but the ISP does not market or make its services available in the U.S. In this case, the ISP would likely not be subject to U.S. law. Therefore, it is likely that the ISP is only subject to Australian law due to its location in Australia—and possibly Malaysian law if qualifying under Malaysian personal jurisdiction requirements. Alternatively, if the Australian ISP actively markets its services to U.S. citizens and businesses, the ISP may be subject to U.S. jurisdiction, and thereby potential liability under the DMCA. This would give the Spanish artist the ability to submit a U.S. takedown notice against the Australian ISP that would subject the ISP to potential liability under the DMCA if is fails to take action on the takedown notice.

Two important things to note:

Failing to qualify for jurisdiction does not mean a rights holder is barred from demanding an ISP to takedown content that infringes a protected work. It simply means that an ISP may not be compelled or have incentive to remove infringing content because they are unlikely to face liability.

Many content submission sites like YouTube and Facebook, as well as search engines such as Google and Bing, maintain their own takedown submissions procedures that are generally available to users regardless of their geographical location or where a protected work is infringed online.

What Countries Have National Takedown Procedures and What are Such Countries’ Requirements? To effectively utilize takedown procedure against an ISP, the ISP’s host country or country to which it is brought under personal jurisdiction must possess takedown procedures for rights holders, and such rights holders must comply with such procedural requirements. This requires understanding:

Whether the country to which the ISP is subject to jurisdiction has takedown notice legislation

If so, what are the country’s takedown notice requirements and procedures.

National Takedown Notice Legislation.Surprisingly, not all countries maintain takedown notice legislation for rights holders. Major markets including Argentina, Brazil, Canada, India, Israel, Mexico and Russia are among those that don’t currently have takedown notice procedures. Despite such gaps, a large number of Berne Convention countries have enacted takedown notice legislation including the U.S., Australia, China, France, Italy, Germany, Japan, New Zealand, Singapore, South Africa, South Korea, Taiwan and the United Kingdom, to name a few.

National Takedown Notice Requirements:Below are the requirements for takedown notices in a number of major markets that have notice and takedown legislation.

A physical or electronic signature of a person authorized to act on behalf of the rights holder alleging infringement;

Identification of the copyrighted work(s) claimed to have been infringed;

Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);

A statement that the rights holder has a good faith belief that the use of their content is not authorized by the rights holder; and

A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7], being copyright material residing on your system or network.”

(If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by me or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;

(If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;

(If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;

The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and

An attached schedule to the notice including a description of the copyright material and the location of the infringing content.

A statement that there appears to have been an infringement of the owner’s copyright in the protected work;

A description of the apparent infringement;

Evidence of the apparent infringement that shows the infringer’s IP address and the time at which the evidence of infringement was gathered;

Notice must be sent to the ISP within one (1) month of when evidence of the infringement; and

The notice complies with any other requirement of the initial obligations code.

Note: Some of these national take down requirements are derived from translations. Rights holders should consult with National Copyright Offices or qualified attorneys in the jurisdictions they wish to enforce their rights in order to confirm these and other take down notice requirements.

Further Issues After a Takedown Notice is Submitted. Finally, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an infringer may respond to a takedown notice by submitting a counter notice attesting to their rights in a protected work, even after their online content or website has been blocked or removed. Also, an ISP may refuse to act after a takedown notice has been submitted. If these circumstances arise, one should consider contacting a qualified attorney to discuss further actions.

Special thanks to co-author Kenneth Louis Strocsher, J.D. Candidate, 2014, Seattle University School of Law.